Utility Patent

On remand from the Supreme Court’s Halo Electronics decision, the Federal Circuit affirmed the jury’s willfulness finding under the new subjective standard but vacated the enhanced damages award, instructing the district court to exercise its discretion anew — illustrating how post-Halo willfulness analysis shifts enhanced damages decisions back to district court discretion.

An en banc Federal Circuit held that a pharmaceutical company’s contract with a manufacturer to produce drug batches — where title to the product remained with the inventor — did not constitute a ‘commercial sale’ triggering the on-sale bar under Section 102(b), clarifying the boundaries between legitimate pre-commercial manufacturing and invalidating sales activity.

The Federal Circuit denied mandamus to TC Heartland, a company challenging patent venue in the District of Delaware, deferring to its own longstanding rule that domestic corporations can be sued for patent infringement wherever they are subject to personal jurisdiction — a position the Supreme Court unanimously reversed in 2017.

An en banc Federal Circuit held that a patent owner’s restricted domestic sales don’t exhaust patent rights when clearly communicated restrictions are violated, and that foreign sales never exhaust U.S. patent rights — both holdings later reversed by the Supreme Court in a landmark 2017 patent exhaustion ruling.

The Federal Circuit affirmed a jury verdict of non-infringement for Apple in a wireless patent case, holding that even mathematically equivalent signal-processing operations implemented through structurally different hardware pipelines are not equivalent under the doctrine of equivalents — the different structures matter even if the mathematical outputs are the same.

The Federal Circuit held that there is no universal rule requiring patent damages models to begin with the smallest saleable patent-practicing unit — but remanded CSIRO’s Wi-Fi patent damages award because the district court failed to account for the patent’s standard-essential status when setting the royalty rate, requiring a FRAND-adjusted award.

The Federal Circuit unanimously rejected a patent holder’s constitutional challenge to inter partes review, holding that IPR proceedings do not violate Article III or the Seventh Amendment because patents are public rights that may be adjudicated by an administrative agency without access to a federal court or jury — a foundational ruling for the PTAB system.

In a 6-5 en banc decision, the Federal Circuit held that laches remains a valid defense that can bar recovery of pre-suit patent damages — splitting from the Supreme Court’s copyright ruling in Petrella v. MGM and ruling that Congress had separately codified laches as a patent defense in 35 U.S.C. § 282.

On remand from the Supreme Court, an en banc Federal Circuit expanded direct infringement liability beyond the single-actor rule, holding that an entity can be liable for another’s performance of method steps when it conditions participation or a benefit on that performance and establishes the manner or timing of the performance.

An en banc Federal Circuit overruled its prior ‘strong presumption’ that claim terms without the word ‘means’ are not means-plus-function limitations, holding that terms like ‘module’ that claim a function without reciting sufficient structure are subject to Section 112’s means-plus-function rules — and typically invalidated for indefiniteness when the specification lacks corresponding structure.

The Federal Circuit affirmed infringement findings in a spinal implant patent case but remanded on damages, holding that lost profits are limited to products the patentee itself sells and that convoyed sales damages require a functional relationship between the patented and unpatented products — significantly narrowing the damages available to Warsaw Orthopedic.

In the first Federal Circuit decision reviewing an inter partes review (IPR) final written decision, the court affirmed the PTAB’s use of the ‘broadest reasonable interpretation’ claim construction standard in IPR proceedings — a ruling that set the rules for thousands of subsequent patent challenges.

The Federal Circuit held that exporting a single ‘main’ or ‘essential’ component of a patented multi-component product from the U.S. can constitute infringement under Section 271(f)(1) — a ruling the Supreme Court unanimously reversed in 2017, holding that a single component is categorically insufficient.

The Federal Circuit provided the most comprehensive guidance yet on how to calculate reasonable royalties for standard-essential patents (SEPs) subject to FRAND commitments, holding that damages must reflect incremental value of the invention rather than value derived from standardization, and that hold-up and royalty-stacking concerns require evidentiary support.

The Federal Circuit affirmed its two-part Seagate test for enhanced patent damages, refusing to award treble damages even where a jury found willful infringement — a holding the Supreme Court would reverse in 2016 by eliminating the objective recklessness requirement and restoring broader district court discretion.

The Federal Circuit vacated a $368 million patent verdict against Cisco and Apple in VirnetX’s network security patent case, rejecting the Nash Bargaining Solution as a royalty methodology and requiring strict apportionment to the patented features even when the smallest salable unit is the accused product itself.

The Federal Circuit applied the Supreme Court’s newly articulated Nautilus indefiniteness standard to Interval Licensing’s ‘attention manager’ patents, affirming that numerous claims were indefinite while vacating non-infringement findings on other claims based on errors in the district court’s claim construction — one of the first Federal Circuit applications of the Nautilus ‘reasonable certainty’ test.

The Federal Circuit affirmed a landmark $1.5 billion damages award against Marvell Technology for willful infringement of Carnegie Mellon University’s hard drive signal processing patents — one of the largest patent verdicts in history — while vacating parts of the damages calculation and remanding on the royalty base for activities occurring outside the United States.

The Federal Circuit reversed Judge Posner’s dismissal of patent damages claims and held there is no categorical rule barring injunctions for standard-essential patents — but affirmed that Motorola could not obtain an injunction on its FRAND-committed SEP because it had already committed to license on reasonable terms.

The Federal Circuit applied de novo review to all aspects of claim construction and affirmed the invalidity of Teva’s multiple sclerosis drug patents — a ruling the Supreme Court partially reversed in 2015, holding that underlying factual findings in claim construction must be reviewed for clear error rather than de novo.

The Federal Circuit held that when the PTO cancels a patent’s claims during reexamination proceedings that conclude while district court litigation is still pending on appeal, the cancellation moot the district court judgment of infringement — there is no longer a valid patent to infringe — even though the district court had already entered final judgment in the patentee’s favor.

The Federal Circuit held that a defendant’s good-faith belief that the asserted patent is invalid can negate the specific intent required for induced infringement — a ruling the Supreme Court reversed in 2015, clarifying that validity and infringement are separate inquiries and invalidity is not a defense to inducement.

The Federal Circuit affirmed a $391 million patent infringement judgment against SAP — then the largest software patent damages award ever affirmed on appeal — for infringement of Versata’s product pricing patents, while vacating an overbroad injunction.

The Federal Circuit held that the term ‘spaced relationship’ in a heart rate monitor patent was not indefinite because it was ‘amenable to construction’ and not ‘insolubly ambiguous’ — applying its then-prevailing indefiniteness test that the Supreme Court unanimously rejected in 2014, replacing it with the ‘reasonable certainty’ standard that governs today.

The Federal Circuit, sitting en banc, affirmed the Cybor de novo standard of review for claim construction — declining to overturn its 1998 precedent requiring appellate courts to review district court claim construction rulings without deference, in a decision that set the stage for the Supreme Court’s subsequent reversal in Teva v. Sandoz (2015).

The Federal Circuit affirmed a district court’s post-trial entry of judgment as a matter of law for Apple, overturning a $208 million jury verdict and holding that Apple’s Spotlight, Cover Flow, and Time Machine features did not infringe patents covering chronologically organized data stream interfaces.

The Federal Circuit sitting en banc held that a party who induces multiple actors to collectively perform all steps of a method patent claim can be liable for induced infringement even if no single party directly infringes all steps — significantly expanding liability for divided infringement of internet and software method patents.

The Federal Circuit reversed an obviousness finding in a Hatch-Waxman dispute over method-of-treatment patents covering naproxen-esomeprazole combination therapy for treating pain while reducing gastrointestinal damage — holding that the district court failed to properly analyze the motivation to combine the specific drugs in the specific claimed dosing regimen.

The Federal Circuit affirmed a $371 million enhanced damages award against W.L. Gore for willful infringement of Bard’s vascular graft patent — one of the largest patent verdicts in history — holding that Gore’s employee did not qualify as a joint inventor and that the pioneering PTFE graft invention belonged solely to Bard’s inventor, Dr. Robert Goldfarb.

The Federal Circuit affirmed an exceptional case fee award against Allcare Health Management for maintaining objectively baseless patent infringement claims, applying the then-prevailing two-part test for § 285 fee awards and addressing the standard of review for exceptional case determinations — a ruling that set the stage for the Supreme Court’s 2014 Octane Fitness decision.

The Federal Circuit reversed a finding of indefiniteness in a touchscreen patent dispute, holding that a claim term need not be expressed in traditional means-plus-function form to invoke § 112(f) — and clarified when functional claim language triggers the algorithm-disclosure requirement, with significant implications for computer and touch interface patent litigation.

The Federal Circuit sitting en banc overhauled the doctrine of inequitable conduct, holding that rendering a patent unenforceable requires both but-for materiality (the undisclosed information would have blocked the patent) and specific intent to deceive the USPTO — dramatically narrowing a defense that had become a routine litigation tactic.

The Federal Circuit addressed joint infringement in a healthcare IT patent dispute, holding that when patients and healthcare providers together perform steps of a patented method for online patient-provider communications, neither party alone is a direct infringer — applying the direction-or-control standard for divided infringement to electronic health record systems.

The Federal Circuit ruled that the widely used ’25 percent rule of thumb’ for calculating starting-point patent royalties is inadmissible as a matter of law, vacating a $388 million damages award against Microsoft and requiring that every patent royalty calculation be tied to the specific facts of the case.

The Federal Circuit reversed a summary judgment of obviousness in a deepwater drilling rig patent dispute, holding that the district court failed to give adequate weight to powerful objective evidence of non-obviousness — including commercial success, long-felt need, and failure of others — and remanded for proper analysis of the full record.